B. What Domain Names May Be Registered As Trademarks

Not all domain names may be registered as trademarks. The PTO appears to be unwilling to register generic domain names, such as coffee.com or drugs.com. Similarly, the PTO will look askance at weak domain names, such as those using a surname or descriptive terms. (Chapter 3 discusses the difference between distinctive (strong) marks, descriptive (weak) marks and genericmarks.)
Even weak marks, however, can usually make it on to what's called the supplemental register. So if the PTO rejects your original application because your mark lacks distinctiveness, you can amend the application and ask that the mark be added to the supplemental register. The supplemental register doesn't provide the same benefits as the main trademark register (called the Principal Register), but it does put your mark on the map, so people will find it when they do a trademark search. At the very least, you will prevent unknowing infringement of your domain name.
Federal rules prohibit certain types of trademarks from being registered at all. There haven't been any court decisions on how these rules apply to domain names, but existing trademark law suggests that the following types of domain names are not registrable:
•Domain names that contain "immoral," "deceptive" or "scandalous" matter. Immoral or scandalous, in this context, means that the mark might cause scandal or be disgraceful, offensive, disreputable, or excite retribution or elicit condemnation from the average consumer. These rather loose guidelines are considered in light of the mark itself and with the goods or services to which it is attached. There aren't any recently decided court cases on this subject, but you can imagine that some four-letter words with a .com after them are not going to be accepted by the PTO. A deceptive mark is one that suggests that the product or service came from a source other than its true source—for example, a domain name such as californiacheese.com, which only sells cheese from Wisconsin. (The PTO uses the sample of your trademark, which you are required to submit along with your application (called the specimen) to make sure that, among other things, your name s not deceptive. See Section D, Step 2, below for more about specimens.)
•Domain names that disparage or falsely suggest a connection with persons (living or dead), institutions, beliefs or national symbols. For example, the domain name jackieofashions.com would not be a registrable trademark for a website that attempts to use Jackie Onassis's image to sell clothing totally unconnected with the former first lady or her estate.
•Domain names that consist of or contain a name identifying a particular living individual (except with his or her written consent), or the name of a deceased president of the United States during the life of his widow, if any, except with the written consent of the widow. For example, you may be able to register the domain name barbrastreisand.com, but the PTO won't register it as a trademark for a website that sells Barbra Streisand CDs, photos, dolls, plates and other memorabilia, unless Barbra Streisand gives you written consent to use her name.
•Domain names containing marks that organizations have the exclusive right, by statute, to use. Boy Scouts is a good example. Similarly, use of the name Smokey the Bear is reserved to the Department of the Interior. So boyscouts.com and smokeythebear.com are off-limits as trademarks.